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Posts Tagged ‘Tarnishment’

NuvaRing Can Prevent Pregnancy, But Not Criticism

Friday, June 19th, 2009

In a recent domain dispute decision of N.V. Organon and Schering Plough Corporation v. Fields Law Firm and Stephen Fields (Nat. Arb. Forum 1259266, June 16, 2009) a single member panel was faced with a dispute over www.nuvaringsideeffects.com. Complainant is the owner of the popular contraceptive device and NUVARING and owns federal trademark registrations for same. Complainant maintains a web site at www.nuvaring.com. Respondent is a personal injury law firm and maintains a web site at www.injurygroup.com. Complainant contends that the disputed domain is being used by Respondent to confuse the public and tarnish the goodwill and reputation of Complainant. The Complaint explains that when a user goes to the disputed domain it seeks to solicit customers to file lawsuits against Complainant resulting from use of the NUVARING. Specifically, Complainant contends the disputed domain includes headings such as “NuvaRing Class Action Information,” “NuvaRing Side Effects – NuvaRing Law Suit,” “NuvaRing Warnings,” “NuvaRing Blood Clot,” NuvaRing pulmonary Embolism,” and “NuvaRing Lawsuit.” Respondent contends that it is using the domain in connection with a bona fide offering of goods and services, prior to notification of any dispute. Further, Respondent claims it is using the domain in a nominative fair use manner for referring to Complainant’s and their NuvaRing product. Both parties provided additional submissions which expounded on their original arguments.

Under the ICANN UDRP Policy paragraph 4(a) the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interest in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

The Panel addressed the first element, whether the domain was identical or confusingly similar to Complainant’s mark. The Panel found the domain contained Complainant’s entire mark and merely added generic words such as “side” and “effects.” This element favored transfer of the domain to Complainant.

Moving to the second element, whether Respondent had any rights or legitimate interests in the domain, the Panel noted that Complainant must first establish a prima facie case. The Panel explained:

Complainants’ evidence establishes that (i) Respondents are not licensees of Complainants, nor have they received permission or consent to use Complainants’ trademark; (ii) Complainants have prior rights in that trademark which precede Respondents’ registration of the Domain Name; and (iii) Respondents are not commonly known by the trademark.  Complainants have thus made a prima facie showing that the Respondents have no legitimate rights or interest in the domain name.

The burden then shifted to Respondent and the Panel made a finding that “Respondents prove[d] that they are using it to offer legal services in connection with consumers who may have been harmed by Complainant’s product and to provide[d] information to the public about Complainant’s product.” The Panel also reviewed and applied the standard for nominative fair use argued by Respondent, and as established by the 9th Circuit Court of Appeals case of  New Kids on the Block v. News Am Publ’g. Inc., 971 F.2d 302, 308 (9th Cir. 1991).  The New Kids case standard is as follows:

(1) The product or service in question must be one not readily identifiable without use of the trademark; (2) only so much of the mark may be used as is reasonably necessary to identify the product or service; and (3) the use must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

The Panel found that Respondent did establish its nominative fair use of the mark per appellate court precedent. The Panel also addressed Complainant’s assertion of initial interest confusion, noting as follows:

This Domain Name contains nothing to suggest that the related website would be sponsored or endorsed by Complainants or anyone else seeking to promote the NuvaRing product.  The message in the Domain Name tends in the opposite direction.  The plain meaning of the words “NuvaRing side effects” is much closer to “the NuvaRing may be dangerous or have risks associated with it” than to the kind of message that would be offered by its manufacturer.  A reasonable consumer would not assume that a website by this name would be sponsored by the manufacturer of the named product.  A description of “side effects” might be included in a website sponsored by the manufacturer, but “side effects” would not likely be in the name of the website itself.

The Panel also found that Respondent’s use of a disclaimer on the web site was further evidence of their legitimate rights and interests since it immediately and sufficiently informs users of the non-affiliation. Lastly, Complainant cites to three prior domain decisions where an attorney was using domains to promote lawsuits against AIG. (See American International Group, Inc. v. Debra Speyer, FA 422815 (Nat. Arb. Forum Apr. 7, 2005), American International Group, Inc. v. Debra Speyer, FA 481752 (Nat. Arb. Forum June 28, 2005), and American International Group, Inc. v. Bruce Levin, FA 591254 (Nat. Arb. Forum Dec. 21, 2005)). The Panel distinguished all these cases since nominative fair use was not asserted by respondent in any of the cited cases and because “the fact that the Respondents’ use of the Domain Name here may not fit within the provisions of Policy ¶ 4(c)(iii) does not preclude them from establishing their rights or legitimate interest in some other fashion, which they have.”

Ultimately, the Panel found that Claimant did not satisfy the second element and DENIED the request for transfer. The Panel did not address the bad faith element in light of the failure to prove the second element.

Critical Commentary is Not Bad Faith Use of Troubled Teen Site

Monday, November 10th, 2008

In the recent decision of Susan Scheff v. Psyborgue (WIPO D2008-1177, September 22, 2008), a WIPO panel was faced with a question of a purported criticism web site. The Complainant, Susan Scheff, claims to be a “parent advocate who assists parents of troubled teens [to] research and identify programs and schools that can assist their troubled teens in getting back on track to a healthy, productive lifestyle.” She holds a registered service mark for SUE SCHEFF and another for SUESCHEFF.COM for information about parenting topics, namely drug and alcohol awareness. The Complainant operates two web sites, namely www.suescheff.com and www.helpyourteens.com.

The domain in dispute was www.sueschefftruth.com. The Respondent, who was identified as Michael Crawford, explained:

[T]hat he registered the Domain Name primarily to “provide information to the public regarding Sue Scheff, her company PURE, and the quality of services offered under that name free of charge to parents.” The website associated with the Domain Name posts Mr. Crawford’s blog comments, media articles, court documents, and postings by readers concerning the Complainant. Typical postings question the Complainant’s objectivity, assert that she or her daughter have financial ties to some of the institutions and programs that the Complainant recommends to parents, and allege that some of these programs have been implicated in charges of child abuse or neglect.

The Panel addressed the first prong of the three-part UDRP test and summarily determined that the accused domain was identical or confusingly similar to the Complainant’s marks. The Panel then focused on the second prong of the UDRP test, namely whether the Respondent had any rights or legitimate interests. The Panel noted, “On the face of it, this appears to be a legitimate noncommercial or fair use of the Domain Name. The Complainant characterizes the remarks on the Respondent’s website as ‘disparaging,’ but the Panel is not required (or equipped) in this UDRP proceeding to determine the truth or falsehood of the criticisms that appear on the website.”

Complainant argued that Respondent used the web site for commercial gain, and specifically linked to Amazon’s web site as well as a place where donations were requested. The Panel reviewed these allegations and explained:

In the Panel’s view, a link to a commercial Amazon website and a solicitation of donations, as formerly found on the Respondent’s website, are themselves insufficient in this instance to establish the Respondent’s intent to misleadingly divert consumers for commercial gain. The website is overwhelmingly devoted to criticism of the Complainant’s interests, methods, and advice, not to commercial offers or solicitations of funds.

Complainant also asserted tarnishment of her trademarks, to which the Panel quoted earlier WIPO decisions that generally rejected those assertions. “Tarnishment in this context refers to such unseemly conduct as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark. In contrast, fair-use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy, the primary concern of which is cybersquatting. Claims sounding in commercial libel must be brought in other legal venues.”

The Panel then moved onto the last prong of the test, whether the Respondent registered and used the domain in bad faith. The Panel reviewed the Respondent’s web site and evidence from the internet Archive provided by Complainant.

An examination of the Respondent’s website reveals that it is decidedly polemical rather than commercial in nature. The earlier Amazon link and “shopping cart” for donations were both buried at the end of the series of blog posts. They were not prominent, and they were not even visible on the first screen. The Panel on balance finds the Respondent’s explanation credible, that these were weak attempts to help fund the website itself and not a significant purpose of the website.

Ultimately, the Panel found that the Respondent made nominative fair use of the Complainant’s name and the that modifier “truth” casts doubt as to affiliation. As a result, the Panel DENIED the request for transfer.

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